WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gibson, LLC v. Jeanette Valencia

Case No. D2010-0490

1. The Parties

Complainant is Gibson, LLC of Albuquerque, New Mexico, United States of America, represented by Paul Adams, United States of America.

Respondent is Jeanette Valencia of Mira Lorna, California, United States of America, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <moderncowgirls.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed by email with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On March 31, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2010. The Response was filed with the Center on April 28, 2010.

The Center appointed David H. Bernstein as the Sole Panelist in this matter on May 7, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Gibson, LLC owns a fashion label that sells cowgirl and western themed clothing and jewelry. Complainant registered the <moderncowgirl.com> domain name on February 25, 2000. Complainant is the owner of the registered trademark MODERN COWGIRL for “clothing, namely t-shirts, pants and hats.” It applied for the mark before the United States Patent and Trademark Office (“USPTO”) on July 26, 2006, claiming first use in commerce as of March 28, 2000. The trademark was registered on November 27, 2007 without any disclaimer of either “Modern” or “Cowgirl.”

Respondent Jeanette Valencia is the registrant of the Domain Name <moderncowgirls.com>. Respondent's Domain Name resolves to her website where, according to Respondent, “today's cowgirl can find information on new country music and read inspirational content.” Respondent has in the past provided links to products sold by online retailers that, she believes, will appeal to the visitors to her website, though she has removed those links during the pendency of this dispute.

On September 25, 2009, Complainant's counsel lawyer, Ross Perkal, emailed Respondent and demanded that she cease and desist from using Complainant's federally registered MODERN COWGIRL trademark. Mr. Perkal stated that Complainant had previously contacted Respondent regarding the unauthorized use of Complainant's trademark and noted that Respondent had failed to discontinue her sale of competitive goods on her “Fashion” page. Complainant also objected to Respondent's advertisements for “Cheap Modern Cowgirl Jewelry” on the Craiglist website. Complainant threatened Respondent with litigation unless she complied with its request to cease using Complainant's trademark, and agree to refer all inquiries relating to Modern Cowgirl jewelry to Complainant.

Respondent replied on October 2, 2009, thanking Mr. Perkal for bringing the “likelihood of confusion” to her attention. Respondent stated that she “intend[s] to comply with all federal laws and regulations regarding the Modern Cowgirl trademark” and would ensure that her website complied with federal rules and regulations. Respondent denied involvement in posting infringing ads on Cragislist, and agreed to forward any inquiries regarding MODERN COWGIRL jewelry to Complainant.

On December 13, 2009, Mr. Perkal emailed Respondent again, objecting to the “ongoing illegal and infringing use of the tradename Modern Cowgirls” on her website. Complainant accused Respondent of “intentionally confusing consumers and wrongfully implying that [Complainant] is endorsing the boots and other products” that Respondent was selling on <moderncowgirls.com>. Mr. Perkal again threatened Respondent with litigation unless she removed from the website “all reference to “Modern Cowgirls”.”

Respondent replied to Mr. Perkal's second email on December 17, 2009. Respondent denied intentionally infringing the MODERN COWGIRL trademark and insisted that she was not selling any products on her website. Rather, Respondent stated, the “fashion page simply feature[d] boots that [Respondent felt] would be fitting for” her website's demographic. Respondent stated that, “[o]ut of courtesy,” she would remove the “Fashion” page from the website “to eliminate any future questionable violations of the Modern Cowgirl trademark.” Respondent reiterated that her “website is merely a blog that provides information for self development, information on travel, information on working out, and provides inspiration [and] insight for topics that [Respondent] believe[s] appeal to today's Modern Cowgirl.” Respondent refused to “remove reference[s] to Modern Cowgirls that are descriptive of a classification of people.”

On February 3, 2010, Complainant sent Respondent's web host, 1&1 Internet Inc., a cease and desist letter alleging that Respondent was infringing Complainant's trademark. In response, Respondent wrote directly to Complainant on February 5, 2010. Respondent stated that she had “done everything possible to ensure that there is no likelihood of confusion with Complainant's company. Respondent stated that she did not know what else she could do, and offered to put a disclaimer on the website. Complainant replied on February 25, 2010, directing Respondent to contact Complainant's attorney if she needed clarification of Complainant's position.

5. Parties' Contentions

A. Complainant

(i) The Domain Name is identical or confusingly similar to Complainant's mark

Complainant asserts that it has rights in the MODERN COWGIRL trademark by virtue of United States (U.S.) Registration Number 3,344,184, registered on November 27, 2007 and that the Domain Name, which was registered on June 15, 2009, after the registration of its trademark, is confusingly similar to its mark. Complainant alleges that the only difference between the Domain Name and its mark is the addition of an “s”. Complainant asserts that the similarity between its mark and the Domain Name will create a likelihood of confusion as to affiliation, endorsement, and has created actual confusion.

Complainant acknowledges that Respondent filed an application to register MODERN COWGIRLS with the USPTO on March 18, 2010 for “providing a website [for] today's modern cowgirl with information on the latest country music, quotes, love articles, life articles and other inspirational content.” Complainant alleges that the existence of this application, and the description of services of Respondent's website, is irrelevant to the issue of confusion between the Domain Name and Complainant's trademark.

(ii) Respondent has no rights or legitimate interests in the Domain Name

Complainant asserts that Respondent has no legitimate interest in the Domain Name. Complainant alleges that it has used the MODERN COWGIRL trademark for over ten-years, starting long before Respondent's registration of the Domain Name. Complainant alleges that Respondent was aware, or should have been aware through a simple search of the USPTO website, that Complainant had registered and used the MODERN COWGIRL trademark.

Complainant alleges that Respondent's use is not a fair use because the Domain Name “is, has been, and will be, used for commercial purposes.” Complainant claims that this improper commercial use threatens to divert customers from its website, and has created actual confusion.

(iii) The Domain Name was registered and used in bad faith

Complainant alleges that the Domain Name resolves to a website that has been used to sell western cowgirl boots and tote bags. Complainant alleges that Respondent's displaying goods and a link to the sites where the goods can be purchased is an indirect way of diverting business away from Complainant. Complainant asserts that the products sold on the website were clearly “Western Country” products that are confusingly similar to products Complainant sells. Complainant alleges that the Respondent is thus a competitor, and is purposefully interfering with Complainant's business.

Although Respondent ceased selling goods on the website in response to Complainant's counsel's letters, Complainant alleges that nothing will prevent Respondent from directly or indirectly resuming these sales in the future. Complainant also alleges that Respondent invites companies to advertise on the website, and that Respondent could be compensated for hosting advertisements in the future. Complainant asserts that the disclaimer that Respondent placed on her website to avoid confusion does not cure Respondent's bad faith.

B. Respondent

(i) The Domain Name is not identical or confusingly similar to Complainant's mark

Respondent claims that the Domain Name is not identical or similar to Complainant's trademark. Respondent asserts that “Modern Cowgirl” is a generic term, and that “Modern Cowgirl” is both a description of today's cowgirl and of Complainant's trademark relating to her fashion label. Respondent claims that the addition of the letter “s” in the Domain Name as compared to Complainant's trademark changes the meaning of the term to refer to a group of women identifiable as “Modern Cowgirls.”

Respondent denies infringing Complainant's trademark for use in selling clothing. Respondent alleges that her website at <moderncowgirls.com> is “a website where today's cowgirl can find information on new country music and read inspirational content.”

Respondent denies ever having sold products on her website, or having represented that <modercowgirls.com> is affiliated with the MODERN COWGIRL clothing company. Respondent asserts that many women identify themselves as “Modern Cowgirls.” Respondent claims that she has promptly responded to Complainant's attorney's communications in attempts to rectify any questions of likelihood of confusion.

(ii) Respondent's rights and legitimate interests in the Domain Name

Respondent claims that she is commonly known by the name “Modern Cowgirls.”

Respondent asserts that her use is a fair use, is not for commercial gain, and does not tarnish Complainant's trademark. Respondent alleges that Complainant's claims of trademark infringement violate her First Amendment rights to define a “Modern Cowgirl.”

Respondent argues that Complainant's assertions that confusion is likely are invalid. Respondent disputes the evidence Complainant offered as proof of actual confusion; rather, the person identified by Complainant as having been confused was not searching for Complainant's site but rather “looking for pages with cowgirl fan bases to promote her business.”

(iii) Respondent's registration and use in good faith

Respondent denies ever using the Domain Name for commercial purposes. Respondent also denies having offered companies the opportunity to advertise on her website at <moderncowgirls.com>.

Respondent claims that she was never compensated for featuring fashion items on her website's “Fashion” page, and she denies that <moderncowgirls.com> intended to divert business from Complainant. Respondent asserts that she removed the “Fashion” page from her site in good faith to ensure that there was no likelihood of confusion. Respondent alleges that all items sold on her website were clearly identified with their respective brands, and were posted on the site as recommendations that would appeal to her site's demographic. Respondent claims that that there are “endless” websites that sell western themed items on websites using the term “Modern Cowgirl.”

Respondent claims that she acted in good faith by placing a disclaimer on her webpage indicating that <moderncowgirls.com> was not affiliated with Complainant's trademark. Respondent asserts that her responsiveness to Complainant's allegations of trademark infringement show her good faith efforts to resolve possible conflicts.

Respondent denies being in competition with Complainant, and also denies that she registered the Domain Name to disrupt Complainant's business.

6. Discussion and Findings

The Complainant has the burden under paragraph 4(a) of the Policy to establish (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name has been registered and is being used in bad faith. For the reasons discussed below, the Panel finds that Complainant has met that burden.

Respondent's Domain Name uses the plural form of Complainant's trademark. The Domain Name <moderncowgirls.com> incorporates in its entirety Complainant's trademark, MODERN COWGIRL. The addition of the letter “s” is not a sufficient difference to avoid a finding that the Domain Name is confusingly similar to Complainant's trademark. Halcyon Yarn, Inc. v. Henry Chan,
WIPO Case No. D2004-0336.

The Complainant has thus proven that the Domain Name is confusingly similar to its trademark and, as such, has sustained its burden under the first factor.

B. Rights or Legitimate Interests

The interaction between paragraphs 4(a)(ii) and 4(c) of the Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interest in the Domain Name. Once Complainant makes such a showing, the burden of production shifts to the Respondent to come forward with evidence to demonstrate that it has rights or a legitimate interest in the Domain Name. The burden of proof, however, always remains on the Complainant to establish by a preponderance of the evidence that Respondent lacks rights or a legitimate interest in the Domain Name. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1.

Complainant alleges that the Respondent has no legitimate interest in the Domain Name. Complainant asserts that it has used MODERN COWGIRL in commerce for ten years before Respondent's registration of the Domain Name. Complainant alleges that Respondent placed links on her website to sell products that are in direct competition with Complainant's trademarked products, and thus infringed on its trademark. These allegations are sufficient to sustain the required prima facie showing that Respondent lacks a legitimate interest in the Domain Name.

In response, Respondent claims that the term “Modern Cowgirl” is a descriptive term and therefore that she has a legitimate interest in using this descriptive term for her website. Although that assertion might be accurate with respect to a website that blogs about modern cowgirls, it is not true with respect to the portion of the site that advertised the sale of goods under a name that infringes Complainant's registered trademark. A trademarked descriptive term may be used for its descriptive value, but it is not legitimate to use the term “because of its value as a trademark.” See HSBC Finance. Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062; cf. 15 U.S.C. § 1115(b)(4).

Although the Panel cannot make a definitive ruling given the limited record presented in this UDRP proceeding (and in UDRP proceedings generally), based on the material that has been submitted, Respondent's use of the Domain Name in connection with a website providing links to products competing with Complainant's trademarked goods appears to constitute trademark infringement. As such, Respondent's use of her website in an infringing fashion precludes a finding that Respondent has a legitimate interest in the Domain Name. See UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENETRPRISES,
WIPO Case No. D2000-0416.

Respondent further contends that she has rights or legitimate interests in the Domain Name because: 1) Respondent is commonly known by the Domain Name “Modern Cowgirls,” 2) Respondent is making a fair use of the Domain Name without the intent for commercial gain and without harming Complainant's mark, and 3) Respondent has rights under the First Amendment of the U.S. Constitution to use “Modern Cowgirls” as a descriptive term. The Panel has carefully considered each of Respondent's claims of rights or legitimate interests in the Domain Name, and finds that all of Respondent's claims fail.

First, Respondent has not produced any evidence that she is commonly known as “Modern Cowgirls.” Respondent has not, for example, shown that her nickname was “Modern Cowgirls,” that “Modern Cowgirls” was her actual name, that she owned a physical store called “Modern Cowgirls,” that she wrote a newspaper column titled “Modern Cowgirls,” or that she otherwise has been known as “Modern Cowgirls” other than through this website. Cf., e.g., PENGUIN BOOKS LIMITED v. THE KATZ FAMILY and ANTHONY KATZ,
WIPO Case No. D2000-0204 (respondent produced evidence of a legitimate interest in the domain name <penguin.org> by showing his nickname was “Penguin”).

Nor can Respondent fairly claim that she is making a non-commercial use of the Domain Name. If Respondent's use of the Domain Name had been fully noncommercial, it could possibly have been a fair use. Here, it is undisputed that Respondent hosted commerce on her website by providing links to purchase products in direct competition with Complainant's trademark. That is not a “non-commercial” use.

Respondent denies intending to harm Complainant's business, or to infringe its trademark. Trademark infringement, however, does not require malicious intent. The fact that Respondent's website provided links to products in direct competition with Complainant's trademarked goods is sufficient to establish trademark infringement. Moreover, Respondent continued providing links to competing products on her website for months after Complainant's attorney warned Respondent that it's advertising of competing goods on her website under this Domain Name constituted infringement. Although Respondent had changed the heading on her “Fashion” webpage from “Modern Cowgirl Fashion” to “Cowgirl Fashion,” she did intentionally continue to promote commerce on her site.

Respondent alleges that she was never compensated for placing links to purchase goods on her website's “Fashion” page. Even if that is true, Respondent still was promoting commerce on her site. Whether the profit flowed to her or to third parties, this commerce takes the website out of the realm of “non-commercial” websites. Moreover, the Panel questions whether Respondent did profited from sales through her site. Respondent placed links to various items sold on the “www.endless.com” website. Endless.com operates a referral fee program under which, “[b]y linking to Endless.com products you can add compelling content to your site for the enjoyment of your visitors and receive referral fees for doing so.” See Endless.com Affiliates Program at http://www.endless.com/help/200148180.

Respondent alleges that her use of the term “Modern Cowgirls” is protected by the U.S. Constitution's First Amendment. The First Amendment provides that “Congress shall make no law . . . abridging the freedom of speech.” Although this argument may have had some force if Respondent were using a descriptive term solely in connection with a non-commercial website with content related to that descriptive term, as noted above, Respondent here has also hosted commerce on her site and that commerce constituted infringement. In this Panel's view, even if the First Amendment did apply in this circumstance, the protections under the First Amendment are not absolute, and restrictions may be placed on commercial speech without violating the Constitution. See Central Hudson Gas & Electric Corporation v. Public Service Commission, 447 U.S. 557 (1980). The infringing use of a trademark is an example of the kind of use that can be enjoined despite any rights one might otherwise have to use those words for purposes of free speech.

Finally, the Panel notes that, on March 18, 2010, Respondent applied to register the trademark MODERN COWGIRLS for “[p]roviding a website to today's modern cowgirl with information on the latest country music, quotes, love articles, life articles and other inspirational content,” and that she claims first use of that trademark as of June 19, 2009.” Because that application was filed after the commencement of this dispute between Complainant and Respondent, that application cannot provide evidence of rights or legitimate interests in the Domain Name.

The Panel thus finds that Complainant has shown, by a preponderance of the evidence, that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to prove that Respondent has registered and is using the Domain Name in bad faith. The Panel finds that Complainant has demonstrated bad faith under paragraph 4(a)(iii) of the Policy for the following reasons.

For the reasons discussed above, the Panel finds that Respondent has used the Domain Name in bad faith. Paragraph 4(b)(iv) of the Policy provides that bad faith can be shown if, “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or of a product or service on [respondent's] website or location.” “Using a domain name ‘to redirect Internet users to websites that host links to external websites, including websites of Complainant's competitors,' is evidence of bad faith.” Mobile Communication Service. Inc. v. WebReg, RN,
WIPO Case No. D2005-1304 (citing Royal Bank of Canada v. Henry Chan,
WIPO Case No. D2003-0031).

Respondent counters that she had no intention of causing harm to Complainant's trademark. Had Respondent removed the commercial links from her website immediately upon receiving Complainant's first demand, and if the rest of the evidence supported a finding that Respondent had acted throughout in good faith, Respondent may have been able to refute Complainant's allegations of bad faith. Respondent, however, continued using the Domain Name for commercial purposes despite multiple demands to cease the infringing use. Respondent's delayed decision to discontinue commercial use of <moderncowgirls.com> is more supportive of an inference of bad faith than it is of an inference of good faith.

A closer question is presented by the issue of whether Complainant has proven that Respondent registered the Domain Name in bad faith. To prove bad faith registration, Complainant must show that Respondent was aware of Complainant's trademark when she registered the Domain Name and nevertheless registered the Domain Name with a bad faith intention, such as those that are listed in paragraph 4(b) of the Policy.

Complainant alleges that “Respondent was aware of Complainant's use and registrations, or should have been aware through a simple search of the USPTO website or a registrar's database.” Other than her assertions of prior use, Complainant did not, however, offer evidence that could support why Respondent should have been aware of Complainant's mark. Cf. The Knot, Inc. v. In Knot We Trust LTD,
WIPO Case No. D2006-0340 (evidence relating to the popularity of Complainant's website, and the number of hits it has received, helped establish that Respondent should have been aware of Complainant's trademark). Nevertheless, Complainant has established that it has used the MODERN COWGIRL trademark in commerce since March 28, 2000, nearly a decade before Respondent's registration of the website. Furthermore, when Respondent registered the Domain Name in 2009, she may have noted in the searching and registration process that “www.moderncowgirl.com“ was already registered and was used for an active e-commerce business. Thus, it is possible that, at the time she registered the Domain Name, Respondent may have been aware of Complainant's website and trademark, as Complainant asserts.

Critically, the Panel has carefully reviewed the Response to determine how Respondent responded to the assertion that she likely knew of Complainant, its website, and its trademark, at the time Respondent registered the Domain Name. Although she states that she had no intent to infringe Complainant's mark, Respondent never denied knowledge of Complainant – an allegation that commonly is made in UDRP responses. Given that Respondent has not denied that she was aware of Complainant's trademark, the Panel finds that there is enough evidence on the record to support an inference that Respondent registered the Domain Name with knowledge of Complainant and its website, and thus that the registration was in bad faith. The Panel thus finds that the Complainant has sustained its burden regarding the third element.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <moderncowgirls.com> be transferred to the Complainant.